Conflictos entre marcas: Brexit, Gaudí como temas de fondo en algunas decisiones recientes de la EUIPO

Recently, the Boards of Appeal of the European Union Intellectual Property Office (hereinafter EUIPO) issued some interesting decisions highlighting situations that trademark owners may face.

For example, to start with a very topical topic, last 12 January of 2021 the Board of Appeal issued its decision on the case MAX (fig.) / Max et al  (R0204/2020-4 ) enabling to obser already a concrete consequence of the Brexit on  trademark law, affecting the effectiveness of an earlier British trademark as base for opposition to the registration of an EU Trademark (EUTM).

By an application filed on 8 July 2010, MAX KIENE GmbH (‘the appellant’) sought to register the sign ‘MAX’ for goods and services from classes 29, 30 and 31. On 7 December 2010, Frito-Lay Trading Company GmbH (‘the defendant’) filed an opposition against the EUTM applied for based on an EUTM ‘WALKERS MAX’ and a UK trademark ‘MAX’.

The interesting part in this decision is the opposition based on the UK trademark, which was rejected.

As from 1 January 2021, UK trademarks no longer constitute earlier rights within the meaning of Article 8(2)(a)(ii) EUTMR, therefore UK trademarks must be treated in the same way as any other trademark that was, but is no longer, valid and in force due to, e.g., a decision revoking or invalidating the earlier right or the failure of renewing the registration, situations in which the opposition must be considered as unfounded.

The Board held that since an earlier right must enjoy protection within the European Union on the day the decision is rendered, which is not anymore, the case with respect to the UK trademark, the opposition is rejected as unfounded insofar it was based on this earlier UK trademark.

Decision R0067/2020-1 on the case Urban exploration / URBAN EXPLORER is also interesting because it defines what can be considered as retail goods.

On 26 July 2017, an application filed by the North Face Apparel Corp. (‘the applicant’) sought to register the word mark ‘URBAN EXPLORATION’. On 13 November 2017, the opponent filed an opposition based on a EUTM ‘URBAN EXPLORER’.

The key issue lies in the comparison between the retail goods from the earlier mark and the ones from the applicant. In this respect the Boards clarifies that the EUIPO guidelines have changed and proceeds to analyse the retail services in view of the new approach.

The term ‘retail services’ relates to services which are provided with the objective of selling the goods. Therefore, a retail service includes advisory activity, namely an aid to assist the purchaser in selecting from an assortment which, in the Board’s opinion requires expertise regarding the properties, functions, uses and qualities of the goods.

Consequently, accordingly to the Board ‘the skills associated with that of purveying vehicles of the type specified and, indeed the car parts lists, are very different to those associated with the sale of clothing, footwear, headgear, camping and outdoor equipment. The nature of the goods is different, as is their purpose and method of use’. It further specifies that there is no proximity between the goods compared, the services are not in competition and have different distribution channel.

The Board therefore concludes that the appeal is upheld, and the contested decision is overturned.

Finally, the use of Antoni Gaudi’s image, surname and work is the great background theme of the decision R1100/2020-5 on the case GAUDÍ ORIGINAL INSPIRATED /Antonio Gaudí.

On 24 March 2016, the EUTM proprietor sought to register a figurative mark consisting of a design of a man and the words ‘ORIGINAL GAUDÍ INSPIRATED’ and on 26 November 2018, Junta Constructora del Temple Expiatori de la Sagrada Familia (Fundación) filed an application for a declaration of invalidity based on two Spanish trade mark registrations, an EUTM and the right to name and image of ANTONI GAUDÍ.

The Boards analyses the claim made by the invalidity applicant and stated that Antoni Gaudí is the most well-known architect of the Spanish history and that its name is intrinsically linked to a specific technique of “TRENCADIS” (a type of mosaic based on ceramic fragments) from wall tiles.

Moreover, it is established that the relevant legislation is the Spanish law which states that ‘the following may not be registered as trademarks: the civil name or image identifying a person other than the applicant for the trademark, as well as the first name, surname, pseudonym, or any other means that, for most of the public, identifies a person other than the applicant (para. b), unless duly authorised’.

In this case, the majority of the Spanish public will identify the family name GAUDÍ that appears in the registered trade mark with the Spanish architect. As stated above, the registered trademark contains ‘not only the surname GAUDÍ in a prominent position, but other elements that clearly evoke the Catalan architect genial’ such as an obvious reproduction of the official photograph of Gaudí, the name GAUDÍ as a central element and on the background details of wall tiles of different colours placed following the technique of “TRENCADIS”.

Consequently, the Board takes the view that the heirs of Antoni Gaudí have not given express consent to the proprietor of the contested EUTM. Therefore, the contested EUTM registration should be declared invalid.